Ex Parte Herlein et al

Patent Trial and Appeal Board

Jan 29, 2016

12734729 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121734,729 05/19/2010
24498 7590 02/02/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Gregory Charles Herlein
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PU070289 3544
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
02/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY CHARLES HERLEIN,
SCOTT FRANCIS, and VINCENTE. SARTOR
Appeal2014-004436
Application 12/734,729
Technology Center 2100
Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-004436
Application 12/734,729
STATEMENT OF THE CASE
Appellants' invention is directed to a method and system for using
message services for control and interaction in content distribution. (Spec.
1 ). Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for using a message service for communication in a
content distribution environment, comprising:
soliciting a response from a user by displaying a message on a
display device, said user instructed to respond using a message service
not provided by the display device, wherein a message communicated
by said user in response to the solicitation includes information
identifying at least one display for a return response;
in response to a message received from said user, initiating an
action associated with said received message; and
identifying a location for execution of said initiated action using
the information in the message communicated by said user.
The Examiner's Rejections
Appellants seek our review of the following rejections:
Claims 1-11, 13-19, 21, and 22 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Smith (US
2004/0034561 Al, published Feb. 19, 2004) and Rosenhaft (US
2012/0077474 Al, published Mar. 29, 2012).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Smith, Rosenhaft, and Yuan Li (US
2007/0071071 Al, published Mar. 29, 2007).
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Appeal2014-004436
Application 12/734,729
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Smith, Rosenhaft, and Walsh (US
2008/0209335 Al, published Aug. 28, 2008).
ANALYSIS
After consideration of each of Appellants' arguments, we agree with
the Examiner. We adopt the Examiner's findings and conclusions as set
forth in the Examiner's Answer and in the action from which this appeal was
taken. (Ans. 2-23; Final Act. 2-12). Our discussions here will be limited to
the following points of emphasis.
Issue 1: Did the Examiner err by improperly combining Smith and
Rosenhaft?
Appellants contend there is no motivation to combine Smith and
Rosenhaft. (Br. 12). Appellants argue the problems and solutions set forth
are very different and no reason exists for combining them. (Br. 12).
Appellants further argue the modifications required to achieve Appellants'
invention could not be obtained by a person of ordinary skill in the art
without knowing Appellants' invention. (Br. 14).
We are not persuaded by Appellants' arguments. The Examiner finds,
and we agree, that Smith is in the art of displaying advertisements and
analyzing responses and Rosenhaft is an analogous art of displaying an
advertisement solicitation, and concludes it would have been obvious to one
of ordinary skill in the art to combine Smith with Rosenhaft so the system
knows where to send Smith's response message. (Final Act. 3). Thus, we
find the Examiner has articulated how the claimed features are met by the
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Appeal2014-004436
Application 12/734,729
proposed combination of the reference teachings with some rational
underpinning consistent with the guidelines stated in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007). Appellants have not proffered sufficient
evidence or argument to persuade us an ordinarily skilled artisan would not
have been motivated to combine the teachings of Rosenhaft and Smith.
Furthermore, Appellants do not provide sufficient persuasive arguments or
evidence that the Examiner relied on hindsight reasoning. Therefore, we are
not persuaded the Examiner erred in combining Smith and Rosenhaft.
Issue 2: Did the Examiner err in finding the combination of Smith
and Rosenhaft teaches or suggests "identifying a location for execution of
said initiated action using the information in the message communicated by
said user" as recited in independent claim 1 and commensurately recited in
independent claim 15?
The Examiner relies on Rosenhaft to teach or suggest the disputed
limitation. (Final Act. 3). Rosenhaft describes, inter alia, that the "data
message typically includes ... data string input by the customer along with
identifying information for the initiating telecommunications device, such as
the directory number assigned to the originating telecommunications
device." (Rosenhaft, i-f 5; see also Rosenhaft i-fi-18, 11). Additionally,
Rosenhaft states "[t]he data message may include location information
pertaining to the originating telecommunications device, such as information
identifying the originating MTSO and cell tower." (Rosenhaft i-f 5).
Appellants contend such "information about the location of the user is
added to the input sequence in the data message by the telecommunication
switch." (Br. 13). In other words, Appellants argue the location information
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Appeal2014-004436
Application 12/734,729
is added to the message communicated by the user, rather than part of the
message communicated by the user. (Br. 13-14 ).
We are not persuaded by Appellants' arguments. The claim language
only requires that the location be identified using information in the message
communicated by the user. It does not require the user to physically enter
the location as part of the message. Under the broadest reasonable
interpretation of the claim consistent with the Specification, we agree with
the Examiner's findings that the location information in Rosenhaft's data
message is information in the message communicated by the user.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of independent claims 1 and 15. For the same reasons, we sustain the
Examiner's 35 U.S.C. § 103(a) rejections of dependent claims 2-14 and 16-
22.
DECISION
For the above reasons, the Examiner's rejections of claims 1-22 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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